MOLINE PLOW CO. v. MORGAN et al., 243 F. 906

EVANS, Circuit Judge (after stating the facts as above). The question for determination is one of fact, and we are required merely to draw our conclusion from the foregoing statement. An examination of the drawings discloses that all of the devices have some common features, but these common features are old to the art and available to both patentees. In determining what Harry L. Dooley contributed to the art by the device covered by his patent in suit, it is necessary to first consider the particular elements in the combination that were old.

There was nothing new in the annular channel in a corn-planting device, nor in a cell for taking' care of a single grain of corn, nor in an agitator as such. The idea of the annular channel, if patentable at all, was clearly anticipated by Clarencé Dooley, by Spangler, and by Morgan. A cell capable of receiving a single grain of corn, as well as the size and shape of a cell capable of receiving but one kernel lengthwise, was clearly anticipated by the Clarence Dooley device, and by others. In fact no novelty was claimed therefor.

In the specifications forming a part of the patent in question, the following appears: “No particular novelty is claimed herein for the shape or size of these cells, and in regard to this detail it need only be said that the cells are intended to receive and hold only one kernel or grain at a time, and should therefore be of a length and width adapted to the dimensions of the average grains.” - It is true that the annular 'channel, as well as the agitator, differed in some respects from the previously patented devices.

These distinctions, together with the particular combination of elements found in the claims, mark the patentable features of the invention under consideration. In view of the prior art, appellee’s patent apparatus must be confined to the specific device described in the specifications and claims. A rule of law applicable to the situation is well set forth in Sander v. Rose, 121 Fed. 840, 58 C. C.

A. 176, as follows: “When two inventors have each adopted the substantial features or elements of an earlier invention, making, respectively, but slight changes in or improvements upon the earlier device, each will be limited to his own specific form of device; and, if there are differences therein, neither device will be held to be an infringement of the other.

In all such cases, the general words of the claim, especially where the claim contains words of reference to a more particular description of the thing patented, which is contained in the specification, will be held to cover only the structure or the device so particularly described.” Another rule of law, announced in the case of Water Meter Co. v. Desper, 101 U. S. 332, 337, 25 L.

Ed. 1024, can also be well applied to the facts in this suit. “Our law requires the patentee to specify particularly what he claims to he new, and if he claims a combination of certain elements or parts, we cannot decree that any one of these elements is immaterial. The patentee makes them all material by tbe restricted form of his claim.

We can only decide whether any part omitted by an alleged infringer is.supplied by some other device or instrumentality which is its equivalent.” While infringement is not avoided by the substitution of a mechanical equivalent for one of the missing elements, we are unable to find in appellants’ “Plying Dutchman” any mechanical equivalent for the agitator and the separate annular channel appearing in each of the claims under consideration.

Likewise in the “Three in One” device the absence of an agitator such as is described in the claims of appellee’s patent, together with the differently constructed cells, supplied with appellants’ ejector, makes the conclusion that there is no infringement of appellants’ devices irresistible. Each of appellants’ devices fails to respond to any of the claims in controversy. The decree is reversed with directions to dismiss the bill.